Publications
European IP Bulletin, Issue 6, November -
Trade Mark
Trade Mark
12. True. The CFI Agrees with Anheuser-Busch Over ‘Budmen’ Mark
The Board of Appeal agreed with the Opposition Division’s decision on the grounds that there was a likelihood of confusion in the mind of the public owing to the fact that the goods designated by the mark claimed and the earlier marks registered in Denmark, Ireland and the United Kingdom were identical and the fact that the conflicting signs BUD and BUDMEN were visually, phonetically and conceptually similar.
The applicant then brought an action against the decision of the First Board of Appeal on 11 June 2001. Though the applicant conceded that the goods were identical to comparable goods registered by Anheuser-Busch’s in class 25, it argued that there was no likelihood of confusion under Article 8(1)(b) of Community Regulation No 40/94 because the signs were dissimilar. The CFI rejected this argument finding that:
1) The word ‘BUD’ was the dominant element of the two marks and the only difference was the word ‘MEN’. This meant that there was aural, visual and conceptual similarity between the two marks, the conceptual similarity arising from the fact that the word ‘MEN’ didn’t add anything to the mark. It would be understood merely as denoting that the products where aimed at male customers.
2) Co‑existence of the two marks on the Spanish register was irrelevant, as the opposition had been based on registrations in the UK, Ireland and Denmark and these were the relevant territories for determining if the marks were similar.
3) The existence of Community, international and national trade marks containing the sign ‘BUD’ was irrelevant when examining the likelihood of confusion between the conflicting marks. The applicant had argued that the existence of such marks showed that Anheuser-Busch had no monopoly or exclusive right over the sign ‘BUD’; suffice it to observe that those marks were in no way related to the present case, as OHIM had pointed out.
4) The ability for Anheuser-Busch to oppose the registration of a Community mark on the basis of its earlier mark so as to prevent a likelihood of confusion on the part of the public which is likely to impair the guarantee of origin is within the meaning of Article 8(1)(b) of Regulation No 40/94. The applicant had argued that Anheuser-Busch had improperly opposed its application because the principle function of the ‘BUD’ mark had not been compromised.
13. Grey Day For Stihl As CTM Appeal Rejected
Stihl v OHMI CFI T-234/01
On 9 July 1996, Stihl applied for a Community trade mark that was a combination of two colours per se, an orange (Pantone 164c) rectangle above a grey (Pantone 428u) rectangle. The application was sought for goods in Class 7 (mechanical apparatus such as motor saws, mechanical cutting-off machines…). It was refused on 7 April 2000 based on an absolute ground of refusal under art 7(1)(b) of Regulation No 40/94; ‘trade marks which are devoid of any distinctive character’. This was appealed and then rejected by the First Board of Appeal on 24 July 2001. Stihl contended the decision and brought an action before the European Court of First Instance in order to annul it.
Stihl argued that colours could be registered under a Community trade mark, that it could attract the public’s attention from distance towards the undertaking’s range of products, and especially that a colour being able of taking different shapes, a protection under graphical representation would then be insufficient. According to the type of product of the claimant, the distribution of the colours varies. But it was argued that a homogeneous visual impression was maintained therefore enabling the identification of the product. Moreover, it was contended to require that combinations should be of unusual character; precisely was argued that a combination acquiring distinctiveness from use is not anymore unusual. Furthermore, this test should not also determine the distinctive character as the use of neighbouring chromatic ranges was not precluded by the protection of a characterised colour.
OHIM opposed that, in order to avoid an absolute ground for refusal, the distinctive character of a given sign must exist prior to any use of the mark. Also, the recognition of a mark is based on the imperfect picture that is kept in mind. To that extent, the perception will recognise only a limited type of colours as a brand, therefore undermining the argument that the eyes can perceive various types of colours. Finally, the colouring in grey is usual for plastic and metal tool, and orange is commonly used to draw attention against danger.
Combinations of colours per se are capable of constituting a Community trade mark. But the perception of the public is not necessarily the same according to the type of sign. While the public is used to perceive word or figurative marks as identifying the commercial origin of the goods, it is not necessarily true when the sign form part of the appearance of the product. The use of grey or orange was held to be common in this field; also the chromatic specification did not present a perceptible difference. Moreover, the fact that the sign consisted of a combination of shades of orange and grey made it abstract as a whole; the overall impression being simply a colouring of items. Finally, the variation of shapes limited the systematization of the coloured distribution scheme. It would have been impossible for the public to find on the goods a permanent sign that would associate the colours in a homogeneous and predetermined manner.
The trade mark was held devoid of any distinctive character. The action was dismissed and the applicant was ordered to pay the costs.
14. Can Surfers Become Elegant?
H Young (Operations) Ltd v Medici Ltd [2003] EWHC 1589 (Ch)
H Young (Operations) Ltd, the owner of the ANIMAL trade mark [No. 2054886] for clothing and apparel bearing a surfing connection (Class 9, 14, 16, 18, 20 & 25), sued Medici Ltd for use of the mark ANIMALE on clothing for the more mature lady claiming that use of the ANIMALE mark infringed their mark. Medici Ltd issued a counterclaim for partial revocation of the registered trade mark on the grounds of non-use under s46.1.b of Trade Marks Act 1994 (equivalent to Art. 10.1 of Council Directive 89/104/EEC) and s10.2 (equivalent to Art. 5.1.b of Directive 89/104. The breadth of the ANIMAL trade mark specification had to be determined in the first instance in order to adduce any claims of infringement put forward by H Young (Operations) Ltd.
Partial revocation of a registered trade mark under s10.2 of the Act must, Jacob, J. held that, be judged according to a fair description that would be used by the average consumer for the products in which the mark has been used by the proprietor. He further set out the profile of the average consumers attracted to the goods of each parties at para 7, saying Medici’s”... garments are simultaneously elegant and casual, the sort of thing that might be worn at a wedding, a casual dinner party of the middle class, perhaps particularly in summer or on the promenade in Nice or Torquay [!!!]” and H Young’s business was” …focused on customers interested in surfing [or] wanting...some sort of surfing connection”. He then promulgated on the antecedents of a brand of casual wear in the clothing industry remarking that they are often derived from specialized clothing for athletes, such as tennis garments produced by Fred Perry.
The principles of partial revocation under s 10.2 of the Act were established in West (t/a Eastenders) v Fuller Smith & Turner Plc [2003] EWCA Civ 48) and Thompson Holidays Ltd v Norwegian Cruise Line Ltd [2003] RPC 32: (at para 20)”… the average consumer is told that the mark will get absolute protection (“the umbra”) for use of the identical mark for any goods coming within his description and protection depending on confusability for a similar mark or the same mark on similar goods (“the penumbra”). A lot depends on the nature of the goods – are they specialist or of a more general, everyday nature? Has there been use for just one specific item or for a range of goods? Are the goods on the High Street? And so on. The whole exercise consists in the end of forming a value judgment as to the appropriate specification having regard to the use which has been made.”
Defence counsel, relying on the aforesaid principles, attempted to persuade the court that the specification of the ANIMAL trade mark, particularly in respect of Class 25 goods (clothing), should be limited to “Surf-type” goods since it does not support a fair description of casual clothing in a generic sense attractive to old, young, elegant or non-sporty consumers. Jacob, J. was not convinced by this argument and considered that consumers do not make a distinction between types of every day clothing suggesting that (at para 23) “…the same woman …[or man]… is likely to own jeans, trousers, T-shirts or dresses, both formal and informal. Both parties’ goods could easily end up in the same wardrobe…” and declared (at para21)” [that]…trade marks do not normally vanish at the time of purchase…[and are] constant reminders of the maker. He completed his reasoning using a salient caveat “...today’s girl surfer is tomorrow’s wearer of elegant ANIMALE [clothing]”. Indeed, Jacob, J. found that H Young Ltd could prove the attributes of their trade mark across the spectrum of class 25 goods and dismissed Medici Ltd counterclaim. Although he narrowed the specifications of the other classes under the ANIMAL trade mark. The court is now turning to the issue of infringement of the ANIMAL trade mark by Medici Ltd.
15. Exclusive Rights in Trade Marks: Hot Picks
Inter Lotto v Camelot Group Plc [2003] EWHC 1256 (Ch) and Inter Lotto (UK) Ltd v Camelot Group Plc [2003] EWCA Civ 1132
In a case between two lottery companies concerning the use of the mark HOT PICKS, the Court of Appeal has dismissed an appeal against the decision of Laddie J at first instance it agreed that where earlier unregistered rights are built up whilst infringing a trade mark registration under the Trade Marks Act 1994, this will not defeat a claim to protect that goodwill under the law of passing off. The decision did not wholly agree with Laddie J’s assessment of Camelot’s case, however.
This was a preliminary issue between the parties on a defence raised by Camelot against a claim of passing off brought by Inter Lotto. Camelot argued that Inter Lotto was not entitled to rely on its goodwill developed during a period after Camelot’s licensor had filed for a trade mark registration of the mark in question but before Camelot had commenced use of the mark. Inter Lotto had commenced its use only a short time prior to the filing for trade mark registration by Camelot, thus the claim for passing off was unlikely to succeed in the event Inter Lotto was unable to rely upon the later acquired goodwill.
Laddie J considered that Camelot’s was because either Inter Lotto’s use of the mark after the filing was unlawful and therefore could not be relied upon to found the case on passing off (based on the principle of ex turpi causa non oritur actio - no right of action arises from a shameful cause) or that the trade mark registration gave Camelot some overriding entitlement or shield with which to defend the passing off claim.
On the first point Laddie J identified the principle of ex turpi causa non oritur actio to apply only where the conduct was so bad as to give the court reason not to provide protection. Here there was no issue of flagrancy or dishonesty and Inter Lotto had in any case commenced use before filing and a year before Camelot’s use of the HOT PICKS mark. On the second point he contrasted the exclusive negative nature of an intellectual property right from the right of an owner to use that property. Thus it was entirely possible that such use could be prevented by the owner of a competing right such as passing off. In comparing these rights Laddie J noted that passing off didn’t prevent use of a mark, just use of a mark that might cause a deception on the public.
On appeal, counsel for Camelot argued that Laddie J had not appreciated their argument. In the Court of Appeal the argument put forward was not that goodwill developed after the date of filing would be unlawful in the sense of ex turpi causa non oritur actio, where even third parties could benefit from the lack of protection of the goodwill, or that a trade mark registration could override earlier acquired rights by being in some way superior to unregistered rights. In contrast Camelot argued that the Act created a situation as between these two parties due to the filing being made prior to the goodwill in question being developed.
Camelot’s argument can be summarised as follows: (1) under the Act the filing date has a retrospective effect as the date of registration once the application has been accepted and implemented (s.9(3) - an effect not reflected in the Community Trade Mark system); (2) as a result the existence of “earlier rights”(including passing off) that may defeat the validity of an application or existing registration falls to be judged as at this filing date; (3) with respect to such a claim the Act provides for a derogation of a claim based on “earlier rights” (including passing off) where the complainant has acquiesced (s.48) whilst later rights acquired between application and registration have no such recognition in the scheme of the Act; (4) the Act appears therefore to provide a scheme that should not allow the exclusive rights of registration to be defeated by subsequently acquired rights; (5) thus the filing date (the retrospective date of registration) is the relevant date at which to consider the respective rights of such parties and the rights of third parties remain irrelevant.
The Court of Appeal concluded that for the purposes of the question before them, the Act does not provide a scheme that was meant to reconcile the two systems at registered trade marks and passing‑off, especially given that s.2(2) provides expressly that the Act does not affect the law of passing off. It appears that whilst s.48 does provide for explicit derogation from the passing off action, this is a specific and express provision and cannot itself change the law of passing off any further. Thus the relevant date for deciding the case on passing off before the court would be dictated by the law of passing off. In this case, it was the date of Camelot bringing its lottery to the market in late April 2002 at the earliest. Inter Lotto’s lottery was up and running by then.
At first glance it can appear frustrating that the Court of Appeal has been cautious in refusing to consider the wider question of the extent to which the Act may or may not attempt to reconcile the law of registered trade marks with that of passing off. The decision does support an interpretation that s.2(2) clearly separates the application of the law of passing off from that of registered trade marks (except where there is derogation from this principle, rather than having an active effect of defining a comprehensive relationship between the two subjects. This preserves robustness in the law of passing off and its development in the common law, further definition of the relationship between the two actions will be needed on a case by case basis.
As the Court noted, whilst the Act introduced a Community-led trade mark registration system, the origins of the Act are a hybrid of the revision of old English law and the addition of new Community law, which expressly preserves the unfair competition and passing off laws of Member States.
To speed up refusals to register trade marks which are non-distinctive or deceptive and to reduce the uncertainties caused by such applications, the UK Trade Marks Registry has announced that applicants will be given only 3 months to respond to most official objections. This reduction, from the former period of 6 months, takes effect from 1 September 2003 and was announced on 11 August 2003 by way of Practice Amendment Notice 2/03. Prior consultation with the Registration Practice Working Group had revealed that practitioners need more than 3 months to deal with official objections on relative grounds (conflict with a prior right), especially as this often involves obtaining a letter of consent from the proprietor of an earlier mark. For these objections a response period of 6 months has been retained. The Notice makes clear that applications for extensions of time will continue to be considered on their merits. It points out that the Office for Harmonisation in the Internal Market allows only 2 months to respond to objections on absolute grounds (there is no ex officio examination of Community trade mark applications on relative grounds). In announcing the change, the Notice refers expressly to the public interest.
6. EU Pushing for Tougher Rules to Protect Geographical Indications
In the framework of the Doha Round, WTO Members are carrying out negotiations on the establishment of a multilateral register for geographical indications (GIs) of wines and spirits and also the broadening of the scope of special protection given for wine and spirits to other products.
When concluding the TRIPs Agreement it was agreed that negotiations shall be undertaken concerning the establishment of a multilateral system of notification and registration of GIs for wines and spirits eligible for protection of those Members participating in the system.
However, the proposals that were submitted by the two most influential WTO Members (the US and the European Communities (EC)) were so divergent that two camps were formed around the proposal by the EC, and the counter-proposal by the US, Canada, Chile and Japan.
Under the EC proposal, the multilateral registration is envisaged as a three-step process. First, WTO Members would notify GIs that identify goods that originate in their territory. Relevant national legislation, administrative and judicial decisions, as well as bilateral, regional and multilateral agreements would also be notified together with the national provisions implementing the multilateral register. In the second phase WTO Members would have 18 months to examine the notifications. All Members would have the right to challenge the registration of a notified GI. In the third phase the notified GIs would be entered on the multilateral register and any challenge would be referred to in it. The registration would also have legal effects. In the national processes, the fact that a GI appears on the multilateral register would be decisive evidence that it fits the definition, does not constitute a false homonymous indication and has not become generic. Moreover, registration would shift the burden of proof from the owner of the GI to the party that allegedly misuses it regarding eligibility for protection under Articles 22 and 23 of the TRIPs Agreement.
The counter-proposal of the United States, which is less ambitious focuses on the notification element. Under this system, Members would submit a list of domestic GIs eligible for protection under their national legislation, indicating as well other multilateral agreements under which the notified indications are protected. The WTO Secretariat would compile a database of the notified GIs, circulate it to Members and make it accessible on the WTO website. There would be no possibility to challenge a notified GI and the register would have no genuine legal effects.
Major disagreements could also be noted between the two main camps regarding the broadening of the scope of special protection given for wine and spirits to other products.
In June 2002, the EC and a large number of its supporters introduced a submission proposing that the special protection afforded to wines and spirits should be extended to GIs of all products and that the multilateral register should be open to GIs for all products.
Opponents did not agree and the Membership of the WTO remains utterly divided over this issue. While European WTO Members and many developing countries, including all the less developed countries, support the cause, the United States, Canada, Australia, New Zealand and some, mostly Latin American developing countries, still fiercely oppose it.
Click here to return to the Summary page, or on any of the headings below to see the full case notes for that topic:
